Legal Updates

Fifth Circuit: keep your claws off THE KRUSTY KRAB

In a case regarding the Krusty Krab restaurant from SpongeBob SquarePants, the US Court of Appeals for the Fifth Circuit has confirmed that a specific element from a television series can receive trademark protection.

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CJEU's EUIPO v Puma decision: mark owners may rely on earlier decisions as evidence of earlier mark's reputation

The CJEU has found that previous decisions issued by the EUIPO at national level may be validly relied on as a means of evidence of the reputation of an earlier mark.

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Can ear plugs tune out colour? Bright green colour for ear plugs not functional

In a case involving competing producers of foam ear plugs, the US Court of Appeals for the Ninth Circuit has held that there remained a dispute of material fact as to whether the bright green colour is functional for ear plugs.

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UDRP panel refuses to transfer domain name consisting of common surname

A UDRP panel has refused to order the transfer of a domain name that matched the complainant’s mark because the complainant failed to prove that the respondent registered and used the domain name in bad faith.

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Albania introduces new trademark regulation – what you need to know

A new trademark regulation has entered into force in Albania, clarifying a range of issues raised by the changes to the Industrial Property Law introduced in March 2017.

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General Court finds likelihood of confusion between FRANCE.COM and French Republic's earlier FRANCE mark

The EU General Court has confirmed that there was a likelihood of confusion between US company France.com Inc’s FRANCE.COM mark and the French Republic’s earlier FRANCE mark.

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Federal Circuit: TTAB applied wrong test in finding Coca-Cola’s ZERO mark not generic for soft drinks

The US Court of Appeals for the Federal Circuit has vacated a decision of the TTAB, holding that the latter had "asked the wrong question" in determining the genericness of Coca-Cola’s ZERO mark.

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A380 decision: Supreme Court clarifies distinctiveness threshold for plain character marks

The Thai Supreme Court has held that Airbus SAS’s mark A380 is distinctive under the Trademark Act, finding that the letter ‘A’ stands for ‘Airbus’.

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easyGroup versus EasyFly: not an 'easy' case

easyGroup, which is currently engaged in litigation against Colombian airline EasyFly, has failed to comply with an injunction in trademark infringement proceedings initiated by EasyFly.

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General Court rejects Deutsche Post opposition on grounds of low similarity

The EU General Court has confirmed that there was no likelihood of confusion between the figurative mark INPOST and Deutsche Post’s earlier marks POST, EPOST and INFOPOST.

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General Court declines to give three cheers to Staropilsen

In a case involving competing Czech breweries Staropilsen and Staropramen, the EU General Court has confirmed that the trademark STAROPILSEN is invalid.

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Tencent v Monster Energy decision: partial oppositions unlikely to be allowed

The decision of the Intellectual Property Office of Singapore in Tencent v Monster Energy sheds some light on whether partial oppositions are allowed under the Trademarks Act.

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A case of the emperor having very few clothes: descriptive word marks dressed up as logos likely to receive very thin protection

The EU General Court has upheld a decision of the Second Board of Appeal of the EUIPO in relation to seven out of eight identified groups of goods on the basis that the logo mark 3D was descriptive...

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Eighth Circuit: phonetically identical description of competing dog bags does not necessarily cause confusion

In a case involving competitors in the dog bag market, the US Court of Appeals for the Eighth Circuit has affirmed a summary judgment finding that no evidence had been presented from which a jury could infer that...

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Higher Court: imitating the appearance of a restaurant constitutes unfair competition

In a significant decision, Slovenia’s Higher Court has, for the first time, granted protection to the trade dress of a restaurant based on unfair competition.

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General Court's POLO decision highlights additional protection that marks derive from being well known

The EU General Court has confirmed that there was a likelihood of confusion between the mark HPC POLO and The Polo/Lauren Company LP’s earlier mark POLO in Classes 18 and 25.

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Victory for Dior as Supreme People's Court overturns previous decisions on 3D mark for shape of J’adore perfume bottle

The Supreme People’s Court of China has overturned decisions finding that the shape of Dior’s J’adore perfume bottle lacked inherent distinctiveness and that Dior had failed to prove that the mark had acquired...

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General Court finds no likelihood of confusion between pharma marks with same suffix; annuls Board of Appeal decision

The EU General Court has annulled a decision of the Board of Appeal of the EUIPO finding that there was a likelihood of confusion between Tillotts' XENASA mark and Ferring’s earlier PENTASA mark in Class...

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What constitutes genuine use of a EUTM? General Court provides guidance in DOLFINA case

The EU General Court has upheld a decision of the EUIPO in which the latter had revoked the mark DOLFINA on the grounds of non-use for t-shirts and caps in Class 25.

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Implementation of new standard condition on trademarks: what rights holders should know

The Kuwaiti Trademark Office has started to apply a new condition to all marks consisting of two or more elements. Although the practical impact of this condition is likely to be low, it nevertheless creates some concerns.

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First registered Mozambican GI: the rise of GIs in Sub-Saharan Africa

The Mozambican goat market has recently obtained a registration for the 'Tete goat' as GI. This is the first registered Mozambican GI and a milestone in the history of the nation.

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General Court: phonetic differences between marks for beer sufficient to rule out likelihood of confusion, even where goods are ordered orally

The EU General Court has held that the phonetic differences between marks for beer were sufficient to rule out a likelihood of confusion, despite the noisy environment in which the...

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General Court: principle of functional continuity is crucial when assessing similarity of marks

The EU General Court has annulled a decision of the Second Board of Appeal of the EUIPO as the latter had failed to take account of statements submitted to the Opposition Division concerning the lack of conceptual similarity...

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Mark owners beware: new food labelling regulation may restrict trademark rights

In an action filed by Evercrisp (a subsidiary of Pepsico), a Chilean court has held that the restrictions imposed by the new food labelling regulation do not imply an expropriation, but only a limitation of trademark rights based on public health...

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Are services in Classes 42 and 44 similar to goods in Class 5? The General Court decides

The EU General Court has annulled a decision of the Board of Appeal of the EUIPO, finding that there was a likelihood of confusion between the mark EMCURE in Classes 42 and 44 and the earlier mark EMCUR in Class 5.

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Important amendments to IP law proposed: dual trademark registration to be introduced?

Proposed amendments to the Anti-Counterfeiting Act suggest that all marks relating to goods to be imported into Kenya must be recorded with the Anti-counterfeit Authority and trademark registration will be a prerequisite.

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Board of Appeal rebuked by General Court for ruling of its own motion on earlier mark's genuine use

In invalidity proceedings between Glaxo Group and Celon Pharma, the EU General Court has held that the Board of Appeal of the EUIPO did not have the competence to rule of its own motion on the earlier mark's genuine use.

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New Law on Competition: the likely impact for brand owners

Brand owners should take note of the changes introduced by Vietnam’s new Law on Competition, which is due to enter into force on 1 July 2019.

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In landmark decision, CJEU holds that Louboutin's red soles are not a shape

In a victory for Christian Louboutin, the Court of Justice of the European Union has held that the colour red on the sole of a woman’s high-heel shoe is a position mark.

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Franchise founders criminally indicted for failure to transfer trademarks to franchises

Following a lengthy investigation, the Seoul District Prosecutors’ Office has issued criminal felony indictments against the individual founders of several Korean franchise businesses, charging them with breaches of trust.

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Good news for IP rights owners: Indonesia in final stage of setting up IP border protection system

Following the government regulation for the control of import and export of goods entering into force last year, the Ministry of Finance has finally set out the procedures for customs recordal and seizures.

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Issue 74
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